Patent System in Australia

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The Patents Act 1990 establishes the basis of the patent system in Australia. Like other patent systems around the world, the grant of a patent is reliant on an alleged invention satisfying, among others, the criteria of novelty and non-obviousness.

It is a common perception that the threshold for patent grant is lower than those of Australia’s major trading partners. Indeed, according to the legal interpretation of the statues, the body in charge of the Australian patent system, IPAustralia, maintains a lower threshold of novelty and inventiveness compared to the United States Patent and Trademarks Office (USPTO) and the European Patent Office (EPO)[1]. However, a study by Jensen et al.[2] comparing grant rates of different patent offices finds the patentability threshold in Australia higher than that of the USPTO.

Nevertheless, the study by Jensen et al.[3] takes all elements of patentability into account, along with common law and patent office protocols. Working in this area, I note that an Australian application is usually granted more quickly for concurrent applications in different jurisdictions. It is my opinion, based on the documents cited during prosecution, that the Examining division in IPAustralia is not as thorough in scoping out the relevant documents. This might be due to a lack of resources that allows the examiners to understand the technology fully, which in turn result in a poorly prosecuted application.

On the other hand, the Examiners may be guided by the lower threshold of novelty and inventiveness according to interpretation of the legislation[4]. There are several problems with this lower novelty and inventiveness threshold imposed by the legislation. Unnecessarily broad patents ...

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...if the cited documents are reasonable, the applicant then have to show what is new or what “unexpected results” arise from the asserted claim, features of which, I think, should be patentable.

It is undeniable that the inventive threshold in the Australian patent system needs to be lifted, so perhaps the wording of “obvious to try” is necessary as it encapsulates the requirement that over simplistic combination of elements are not patentable. Nevertheless, it is my opinion that Australian Patent Office should adopt a clearly defined obviousness test. Australia, which primarily sources technology from overseas, needs the examination threshold to be comparable to other jurisdictions. A stronger patent system here will afford overseas investors the confidence to invest in Australia as they are ensured the intellectual property protection for their investment.

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